By Scott A. McKeown
| July 31, 2014

Board Emphasizes DJ of Invalidity Prevents Later CBM Filing


The Patent Trial & Appeal Board (PTAB) issues three (3) types of opinions, routine, informative and precedential. The vast majority of PTAB decisions are routine, that is, decisions that are simply publicly available. These decisions may be cited for whatever persuasive value they may have but, as a general matter, routine opinions should be cited sparingly.

Informative decisions are those are not binding, but illustrate norms of Board decision-making for the public, the patent examining corps, and future Board panels. Informative opinions may explain best practices, address recurring problems, identify developing areas of the law, exemplify types of decisions under-represented in commercial case reporting services, or report cases of public interest. Going forward, most designations from the PTAB Trial Section are likely to fall into this category.

Finally, precedential decisions are those that bind all PTAB judges unless the decision supported by the opinion is (1) modified by the Court of Appeals for the Federal Circuit, (2) inconsistent with a decision of the Supreme Court or the Court of Appeals for the Federal Circuit, (3) overruled by a subsequent expanded panel, or (4) overturned by statute. These decisions are relatively speaking, rare.

To date, while the trial section of the PTAB has processed hundreds of AIA opinions and orders, they had yet to designate one precedential, until today.

The Board has now designated SecureBuy LLC. v. CardinalCommerce Corp. (CBM2014-00035, Order April 25, 2014, Paper 12) as precedential. The case is a very short, straightforward read of 35 U.S.C. § 325(a)(1). That is, if you file a DJ of invalidity, CBM options are foreclosed thereafter. (decision here)

The designation of a decision as precedential can take some time given the internal review and voting process followed by the judges.

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